Professional Documents
Culture Documents
PETER BROWNSTEIN,
Appellant
v.
TINA LINDSAY; ETHNIC TECHNOLOGIES
_____________
APPEAL FROM THE UNITED STATES
DISTRICT COURT
FOR THE DISTRICT OF NEW JERSEY
(D.C. Civ. Action No. 3:10-cv-01581)
District Judge: Honorable Joel A. Pisano
______________
Argued July 10, 2013
______________
Before: GREENAWAY, JR., SLOVITER, and BARRY,
Circuit Judges.
(Filed: January 29, 2014)
1. The Beginning
Brownstein and Lindsay worked together at Future
Prospective Clients, Inc. (FPCI), a direct mailing list
company, when they began developing the ethnic
identification system. FPCI later assumed a new corporate
identity, List Services Direct, Inc. (LSDI).1 Beginning
around December 1993, Lindsay began devising the idea and
developing the rules for categorizing names by ethnicity (e.g.,
by looking at first names, last names, suffixes, prefixes, and
geographic location). These rules became known as the
Ethnic Determinate System (EDS) they could be written
out in text, just as one might write out a recipe or driving
directions. The system would use this set of rules to run a
computer program that would predict the ethnicity of a
random list of names from a direct mailing database.
In January 1994, Lindsay enlisted Brownstein to turn
her rules into computer code. This required Brownstein to
code a number of computer programs that did everything
from rewriting a list of names into the proper data format for
processing to turning Lindsays rules into computer code.
These programs became known as the ETHN programs.2
Over the years, Brownstein improved and updated the ETHN
programs, with each new generation of programs being a
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3. The Aftermath
The remainder of Brownsteins relationship with ETech was marred by three lawsuits: the first initiated by LSDI
in federal court, the second initiated by him in New Jersey
state court, and the third initiated by him in federal court.
Although Brownstein did not sign any of the aforementioned
licensing agreements (including the 1997 Software License,
1997 Agreement, and 2000 Agreement), he did sign the two
settlement agreements related to litigation with LSDI in 1998
and the New Jersey state court oppressed shareholder lawsuit
in 2009.
In 1998, LSDI and Raskin (Lindsay and Brownsteins
former employer) sued TAP in the District of New Jersey
over its use of the LCID. That action eventually settled in
September 1998, with LSDI retaining rights to the ETHN
programs written up to that point (and any derivative works
or modifications thereof), referred to as the LSDI Program,
and TAP retaining the rights to the EDS (and any derivative
works or modifications thereof).5
The September 18, 1998 Settlement Agreement (the
1998 Settlement Agreement) from the LSDI litigation
stated 1) that Lindsay and Brownstein would not claim rights
to certain computer programs and derivatives or
modifications thereof (the LSDI Program) and 2) that they
had rights to Lindsays copyrights.
(App. 2768-69
(Settlement Agreement 1-3).)
Notably, the 1998
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There was also the replevin claim that the District Court
dismissed, but Brownstein has not appealed this decision.
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50 motion on
Court issued an
on Appellees
two copyright
JURISDICTION
AND
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rights Lindsay could have had to his code would flow through
the LCID as a joint work with her rules. Further, even if her
registrations covered the LCID and were entitled The LCID,
Including the ETHN Programs, that act would not vest
exclusive ownership of the LCID in Lindsay. Brownstein
would remain a co-author and co-owner because copyright
registration does not establish the copyright, which attaches at
the moment of creation. Consequently, Lindsays copyright
registrations, if anything, are merely placeholders for the
indivisible joint rights she inherently had in the EDS and the
LCID with Brownstein.
b. Brownsteins Copyrights and Copyright Registrations
As mentioned above, Brownstein had copyrights
exclusively in his ETHN programs as an independent work
and non-exclusively in the LCID as a co-author. In addition,
he also had copyrights to whatever new generations of the
ETHN programs and LCID that he created as derivative
works of his first set of ETHN programs and the LCID.
Therefore, although LSDI retained rights to the ETHN
programs that were considered the LSDI Program in the
1998 Settlement Agreement, the subsequent generations of
ETHN programs that Brownstein developed remained under
his ownership because they were derivative works of the
LSDI Program. Brownsteins 2009 copyright registrations
would, therefore, cover any post-1998 generations of the
ETHN programs that were not covered by the 1998
Settlement Agreement with LSDI.
3. Derivative Works of the LCID
At oral argument, Appellees contended that the post1997 versions of the LCID are derivative works and that,
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OF
BROWNSTEINS
COPYRIGHT
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